Golden years are over for ORO trade mark

For hundreds of years Italy has been the home to some of Europe’s finest coffee roasters, exporting their roasted beans around the world.  Coffee culture has been so heavily influenced by Italy that most of our favourite drinks have names adopted from the Italian language: “latte”, “macchiato”, “ristretto”, “espresso“, etc.

The Federal Court recently delivered a judgment¹ in relation to the trade mark “ORO” (meaning “gold” in Italian), used in relation to coffee.  The parties to this case involved two of Australia’s largest leading coffee traders in the likes of Cantarella Bros Pty Ltd (known colloquially for selling Vittoria coffee) (Cantarella) and Lavazza Australia Pty Ltd (Lavazza).  Both Cantarella and Lavazza are no strangers to trade mark litigation, having previously disputed the “ORO” trade mark (amongst other things).

Cantarella challenged this finding, arguing that the evidence of Molinari’s early Australian sales was unreliable² and that any use of the ORO mark was not “trade mark use”.³  Cantarella also contended that if Molinari had used the mark, then it had subsequently abandoned it.⁴ Furthermore, Cantarella argued in the alternative that it was a “concurrent owner” of the “ORO” trade mark due to its honest concurrent use.⁵  Finally, Cantarella claimed that the primary judge erred in not exercising discretion to allow its registrations to stand.⁶

The Full Court of the Federal Court dismissed Cantarella’s appeal.  The court upheld the primary judge’s findings regarding Molinari’s prior use, relying on witness testimony and documentary evidence.

The Full Court found that Molinari had previously used the word “ORO” as a trade mark on its packaging, due to its size, colour, positioning, and prominence, independent of any composite mark.⁷

The Full Court also agreed that Molinari had not abandoned the “ORO” trade mark due to its ongoing use in Australia through various packaging iterations.⁸

Cantarella’s argument for “concurrent ownership” based on honest concurrent use was rejected, as this argument was not properly raised at the initial trial.⁹  The Full Court clarified that ownership generally stems from first use or first application with the intention to use.¹⁰  The Full Court also found no error in the primary judge’s decision not to exercise discretion to save Cantarella’s registrations, noting that allowing registrations for a mark the applicant is not entitled to own would not be in the public interest.¹¹

Lavan comment

This case is a pertinent reminder for businesses to conduct proper clearance searches and protect their trade marks at the earliest possible opportunity.

Prior to applying to register a trade mark (and investing heavily in marketing), it is prudent for a business to consider taking the following risk mitigating steps:

• conduct thorough trade mark clearance searches: before adopting any trade mark or brand name, businesses should conduct comprehensive searches to identify any prior use, even by overseas entities that may import into Australia.  In addition to searching the trade mark register, other searches (such as ASIC, domain and Google searches) can reveal prior use by a competitor.
• maintain clear records of first and continuous use: document the exact date of the first use of your trade marks and maintain evidence of ongoing use across your product range and in relevant markets.
• understand the complexities of composite marks: while a product can bear multiple trade marks, ensure that each element intended as a stand-alone brand is clearly and prominently used (and protected) as such.

If you require assistance or advice in relation to competing trade marks, do not hesitate to contact Iain Freeman or Andrew Sutton.

Disclaimer

The information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.

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